OPPOSITION No B 3 093 720

Migo Nederland B.V., Willem Fenengastraat 16, 1096 BN Amsterdam, Netherlands (opponent), represented by Merkenbureau Registreermijnmerk B.V., Toermalijnstraat 9 A, 1812 RL Alkmaar, Netherlands (professional representative)

a g a i n s t

Shenzhen Ijoy Film Industry Co. Ltd, 6002A Floor 6, East of LaoBing Building, No. 3012 Xingye Road, Xixiang Street, Baoan District, Shenzhen City, People’s Republic of China (applicant), represented by Arpe Patentes y Marcas S.L., c/ Proción 7, Edificio América II, Portal 2, 1ºC, 28023 Madrid-Aravaca, Spain (professional representative).

On 28/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 093 720 is partially upheld, namely for the following contested goods:

Class 34: Tobacco; cigarettes containing tobacco substitutes, not for medical purposes; cigarettes; electronic cigarettes; cigarette tips; tobacco pipes; cigarettes cases; lighters for smokers; cigarette filters; filtering filament bundle for cigarette; herbs for smoking; electronic cigarette cartomizers; liquid nicotine solutions for use in electronic cigarettes.

2. European Union trade mark application No 18 046 017 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 046 017 . The opposition is based on European Union trade mark registration No 17 984 688 for the word mark ‘MIGO’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 34: Electronic cigarettes; tobacco free cigarettes, other than for medical purposes; electronic cigarette cases; smoking sets for electronic cigarettes; electronic cigarette atomizers; liquid solutions for use in electronic cigarettes; liquid solutions for use in electronic cigarettes; electronic cigarette liquid [e-liquid] comprised of propylene glycol; inhalers for use as an alternative to tobacco cigarettes; electronic cigarette liquid [e-liquid] comprised of flavorings in liquid form used to refill electronic cigarette cartridges; electronic cigarette liquid [e-liquid] comprised of vegetable glycerin; flavorings, other than essential oils, for use in electronic cigarettes.

Class 35: Retailing in the field of electronic cigarettes, tobacco-free cigarettes, other than for medical purposes, cases for electronic cigarettes, smoking kits for electronic cigarettes, electronic cigarette evaporators, liquid nicotine solutions for use in electronic cigarettes, liquid solutions for use in electronic cigarettes, liquid for electronic cigarettes (e-liquid) consisting of propylene glycol; retailing in the field of inhalers for use as alternatives for tobacco cigarettes, liquid for electronic cigarettes (e-liquid) consisting of flavourings in liquid form for use in refilling electronic cigarette cartridges, liquid for electronic cigarettes (e-liquid) consisting of vegetable glycerine, flavourings for use in electronic cigarettes, other than essential oils; online retailing in the field of electronic cigarettes, tobacco-free cigarettes, other than for medical purposes, cases for electronic cigarettes, smoking kits for electronic cigarettes, electronic cigarette evaporators, liquid nicotine solutions for use in electronic cigarettes, liquid solutions for use in electronic cigarettes, liquid for electronic cigarettes (e-liquid) consisting of propylene glycol; online retailing in the field of inhalers for use as alternatives for tobacco cigarettes, liquid for electronic cigarettes (e-liquid) consisting of flavourings in liquid form for use in refilling electronic cigarette cartridges, liquid for electronic cigarettes (e-liquid) consisting of vegetable glycerine, flavourings for use in electronic cigarettes, other than essential oils.

The contested goods are the following:

Class 34: Tobacco; Cigarettes containing tobacco substitutes, not for medical purposes; Cigarettes; Electronic cigarettes; Cigarette tips; Tobacco pipes; Cigarette cases; Lighters for smokers; Cigarette filters; Filtering filament bundle for cigarette; Herbs for smoking; Electronic cigarette cartomizers; Gas containers for cigar lighters; Liquid nicotine solutions for use in electronic cigarettes; Pipe racks for tobacco pipes.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Goods or services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44).

Electronic cigarettes are identically contained in both lists of goods.

The contested liquid nicotine solutions for use in electronic cigarettes are included in the opponent’s broad category of liquid solutions for use in electronic cigarettes. Therefore, they are identical.

The contested cigarettes includes, as a broader category, the opponent’s tobacco free cigarettes, other than for medical purposes. These goods are therefore identical. The contested cigarettes containing tobacco substitutes, not for medical purposes are identically covered by the opponent’s tobacco free cigarettes, other than for medical purposes.

The contested herbs for smoking are the main ingredient of the opponent’s tobacco free cigarettes, other than for medical purposes. These goods satisfy identical needs, have the same purpose and method of use, share the same distribution channels and target the same consumers. Furthermore, they are in competition. They are therefore highly similar.

The contested tobacco is similar to the opponent’s electronic cigarettes because they have the same purpose, coincide in their method of use, distribution channels and end users. In addition, they are also in competition.

The contested tobacco pipes, although having a different nature from the opponent’s tobacco free cigarettes other than for medical purposes and electronic cigarettes, have the same methods of use and an general purpose to satisfy the same or similar needs of consumers, that is, smoking through inhaling nicotine or nicotine substitutes. They are to some extent in competition because they are used by the same relevant public for smoking and also coincide in the same distribution channels. Therefore, these goods are similar.

The contested electronic cigarette cartomizers (the combination of a cartridge and atomiser that is part of an electronic cigarette) are similar to the opponent’s electronic cigarettes because they coincide in their distribution channels, end users and are commonly produced by the same undertakings. They are also complementary to the extent that the contested goods are indispensable or important to the use of opponent’s goods.

The contested cigarette filters; cigarette tips; lighters for smokers; filtering filament bundle for cigarette are similar to the opponent’s tobacco free cigarettes other than for medical purposes because the contested goods are essential to the opponent’s goods, therefore these goods are complementary. The opponent’s goods are cigarettes that do not contain tobacco but with the same nature, purpose and destination as tobacco cigarettes in the sense that they also include filters/tips, must be ignited at one end and the resulting smoke is orally inhaled via the opposite end. These goods coincide also in their distribution channels and end consumers.

The contested cigarette cases and the opponent’s tobacco free cigarettes other than for medical purposes target the same relevant public, can share the same distribution channels and are complementary since the contested goods cannot be used without cigarettes (whether they contain tobacco or not). As a consequence thereof, they are similar.

The contested gas containers for cigar lighters are different in nature, purpose and method of use from the closest opponent’s goods, that is, tobacco free cigarettes other than for medical purposes. Although these goods are included in the smoking sector, they are not complementary because the contested goods are not lighters but ‘gas containers for cigar lighters’. Moreover, whilst these goods target the same public and may be found in the same shops, consumers do not expect them to be produced under the control of the same company and they are also unlikely to be branded with the same mark as the opponent’s goods. Therefore, they are dissimilar.

The same reasoning can be applied to the remaining contested goods, pipe racks for tobacco pipes, and the opponent’s tobacco free cigarette other than for medical purposes. Although the public which these goods target are the same and they have the same distribution channels, they have a different nature, purpose and method of use. They are also not complementary or in competition and consumers do not expect these goods to be branded with the same mark or produced by the same companies. These goods are therefore also dissimilar.

None of the goods that have been found dissimilar to the opponent’s tobacco free cigarette other than for medical purposes have relevant points of contact with the other goods of the earlier mark in Class 34 or with the retail services in Class 35, which are also the basis of the opposition. In particular, the opponent’s services have, as subject matter, the retail of electronic cigarettes or tobacco-free cigarettes and components of these goods, none of which have relevant points of contact to the contested goods that are dissimilar. Therefore, they are dissimilar to the contested gas containers for cigar lighters and pipe rack for tobacco pipes.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to varying degrees are directed at the public at large. Although tobacco products are relatively cheap articles for mass consumption, smokers are considered particularly careful and selective about the brand of cigarettes they smoke, so a higher degree of brand loyalty and attention is assumed when tobacco products are involved. This has been confirmed by several Board of Appeal decisions (e.g. 26/02/2010, R 1562/2008‑2, victory Slims (fig.) / VICTORIA et al., where it was stated that the consumers of Class 34 goods are generally very attentive and brand loyal; 25/04/2006, R 61/2005‑2, GRANDUCATO / DUCADOS et al.) Nevertheless, for some other contested smoker’s articles such as lighters for smokers or cigarette filters this degree of attention can be established as average because any brand loyalty involving an increased degree of attention does not exist.

3. The signs

MIGO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is the word mark ‘MIGO’ and the contested sign is a figurative mark consisting of the word ‘mifo’ in a bold stylised typeface.

Although the rounded sign located at the end of contested sign is open on its left side, and this feature departs from common standards used when writing an ‘O’, within the context of the contested sign this element can be easily perceived upfront as the letter ‘O’.

Protection which results from the registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (21/01/2009, T-307/07, Airshower, EU:T:2009:13, § 39, 07/10/2010, T-244/09, Acsensa, EU:T:2010:430, § 28 and the case-law cited). The font of the earlier word mark could therefore be also in lower bold case which is highly similar to that used by the contested sign (29/03/2012, T-369/10, Beatle, EU:T:2012:177, § 42).

The stylization of the verbal element in the contested sign is not in any way of such nature as to detract the consumer’s attention away from the word ‘mifo’ which is not illegible or hard to read.

Neither of these signs would be associated with a particular meaning in any of the languages of the European Union. In these circumstances, ‘MIGO’ and ‘mifo’ are distinctive for the goods at stake.

Visually, the signs coincide in the letters ‘MI*O’ and differ in their third letters, ‘G’ and ‘f’, respectively. They both consist of a single word of four letters and while the typeface of the contested sign is stylised as outlined above, but will not detract the consumers’ attention away from the word as such.

Considering that the signs have an equal number of letters and that three of them appear in identical positions, it is concluded that the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory,the signs coincide in the sound of three out of their four letters ‘MI-O’ and differ in the sound of their third letters ‘G’ v ‘f’. As the signs’ differing consonant is located in their middle, but both have identical vowel sounds, this aural difference would not offset the aural impact of their coinciding initial two and last letters.

Therefore, the signs are aurally similar to an average degree.

Conceptually, neither of the signs would be associated with a particular meaning in relation to the goods concerned. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its earlier mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, ‘MIGO’ has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The contested goods were found partly identical or similar to varying degrees and partly dissimilar to the opponent’s goods and services. A higher degree of brand loyalty of the relevant public is assumed when tobacco goods are involved. The degree of attention for some other contested smoker’s articles was established to an average degree.

The signs in question are visually similar to an average degree and aurally similar to an average degree. The conceptual aspect does not influence the assessment of their similarity. The signs coincide in three out of four letters/sounds, found in the initial and final parts of the signs. Both signs are single four-letter words. The difference in the middle letters and sounds and the stylisation of the verbal element in the contested sign are not sufficient to counteract the similarities between the signs, which result in similar visual and aural perceptions. Even the relevant public with a high degree of attention may overlook these differences in their imperfect recollection of the signs and may therefore be confused as to the origin of the goods in question. Furthermore, there is no semantic content in any of the signs in order to separate the overall similar impressions caused by their coincidences in the consumers’ minds.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested sign must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sam GYLLING

Julia García Murillo

Maria SLALOVA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.